JUDGMENT OF THE GENERAL COURT (Second Chamber)
27 February 2015 (*)
(Community trade mark — Opposition proceedings — Application for Community word mark L’Wren Scott — Earlier national word mark LOREN SCOTT — Relative ground for refusal — Genuine use of the mark — Article 42(2) and (3) of Regulation (EC) No 207/2009 — No likelihood of confusion — Article 8(1)(b) of Regulation No 207/2009)
In Case T‑41/12,
LS Fashion, LLC, established in Wilmington, Delaware (United States of America), represented by R. Black and S. Davies, Solicitors,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Geroulakos, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Gestión de Activos Isorana, SL, established in La Orotava (Spain), represented by F. Brandolini Kujman, J.-B. Devaureix and L. Montoya Terán, lawyers,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 24 November 2011 (Case R 1584/2009-4) concerning opposition proceedings between Gestión de Activos Isorana, SL, and LS Fashion, LLC,
THE GENERAL COURT (Second Chamber),
composed of M.E. Martins Ribeiro (Rapporteur), President, S. Gervasoni and L. Madise, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 27 January 2012,
having regard to the response of OHIM lodged at the Court Registry on 17 May 2012,
having regard to the response of the intervener lodged at the Court Registry on 23 May 2012,
having regard to the decision of 23 July 2012 refusing leave to lodge a reply,
having regard to the orders of 19 September 2012, 17 April 2013 and 5 December 2013 staying the proceedings,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur, to give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court,
gives the following
Judgment
1 On 11 July 2006, the applicant, LS Fashion, LLC, filed a Community trade mark application with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 The mark in respect of which registration was sought is the word sign L’Wren Scott.
3 The goods in respect of which registration was sought fall within, inter alia, Class 25 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Clothing, namely shirts, sweaters, pants, trousers, t-shirts, dresses, skirts, coats, jackets, pullovers, swimsuits, underwear, belts, gloves and scarves; headgear, namely hats, caps and visors; footwear; blouses, blousons, bath slippers, slipper; body linen, corsets, ties, breeches, fur stoles, bras suspenders, garters, petticoats, leotards, pyjamas, panties and underpants, sports shoes, scarves, bandanas, peignoirs, dressing gowns, nightdresses, shorts, jerseys, ski suits, foulards’.
4 That application was published in Community Trade Marks Bulletin No 2/2007 of 15 January 2007.
5 On 22 March 2007, Sucesores de Miguel Herreros, SA, the predecessor in title to the intervener, Gestión de Activos Isorana, SL, filed a notice of opposition to the mark applied for, claiming that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94.
6 That opposition was based on the earlier Spanish word mark LOREN SCOTT, filed on 16 October 1986 and registered on 5 April 1991 under number 1164120, and duly renewed, in respect of goods in Class 25 and corresponding to the following description: ‘Clothes for ladies, men and children, included boots, shoes and slippers’.
7 On 1 October 2007, the applicant requested of OHIM that the intervener furnish proof of use of its earlier mark.
8 By decision of 28 October 2009, the Opposition Division upheld the opposition in respect of the goods listed in paragraph 3 above. The Opposition Division found that evidence of genuine use of the earlier mark had been adduced as regards clothes for ladies, men and children, but that the documents made no reference to boots, shoes and slippers. The Opposition Division also concluded, having regard to the identity or similarity of the goods in question and the similarity between the signs at issue, that there was a likelihood of confusion between those signs.
9 On 21 December 2009, the applicant filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
10 By decision of 24 November 2011 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal. It consequently confirmed the decision of the Opposition Division, finding, in essence, in paragraphs 17 to 23 of the contested decision, that the evidence submitted by the proprietor of the earlier mark proved sufficiently that genuine use had been made of that mark. Furthermore, the Board of Appeal confirmed, in paragraph 25 of the contested decision, that the goods in question were identical or similar and, in paragraphs 26 and 27 of that decision, that the signs at issue had an average degree of visual and phonetic similarity. It found, in paragraph 28 of that decision, that the signs did not convey any concept. As regards the examination of the likelihood of confusion, the Board of Appeal held, in paragraphs 30 to 32 of the contested decision, that, having regard to the average distinctiveness of the earlier mark, there was a likelihood of confusion between the signs at issue.
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision;
– annul the decision of the Opposition Division in so far as it upheld the opposition;
– allow the registration of the Community trade mark in its entirety;
– order OHIM and the intervener to pay the costs.
12 OHIM and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Admissibility of new evidence
13 The applicant has produced, in Annex A 30 to the application, evidence intended to prove that the mark applied for was well known in Spain.
14 In this connection, it should be recalled that the purpose of an action before the Court is to review the legality of decisions of the Boards of Appeal of OHIM within the meaning of Article 65 of Regulation No 207/2009. It is therefore not the Court’s function to re-evaluate the factual circumstances in the light of evidence which has been adduced for the first time before it (judgments of 19 November 2008 in Rautaruukki v OHIM (RAUTARUUKKI), T‑269/06, EU:T:2008:512, paragraph 20, and of 25 June 2010 in MIP Metro v OHIM — CBT Comunicación Multimedia (Metromeet), T‑407/08, ECR, EU:T:2010:256, paragraph 16).
15 In those circumstances, the annex referred to in paragraph 13 above, which was not produced by the applicant in the course of the administrative proceedings, must be declared to be inadmissible. The review of the legality of the decision will therefore be carried out in the light solely of the evidence disclosed during the administrative proceedings and which appears in OHIM’s case-file (judgment of 15 July 2014 in Łaszkiewicz v OHIM — Capital Safety Group EMEA (PROTEKT), T‑576/12, EU:T:2014:667, paragraph 25).
Substance
16 The applicant raises two pleas in law. The first plea alleges infringement of Article 42(2) and (3) of Regulation No 207/2009 and the second alleges infringement of Article 8(1)(b) of that regulation.
First plea in law, alleging infringement of Article 42(2) and (3) of Regulation No 207/2009
17 The applicant claims, in essence, that the evidence submitted by the intervener in order to show genuine use of the earlier mark does not satisfy the conditions laid down by the case-law.
18 In this connection, it should be recalled that it is apparent from recital 10 in the preamble to Regulation No 207/2009 that the legislature considered that there is no justification for protecting an earlier trade mark except where it is actually used. Consistently with that recital, Article 42(2) and (3) of Regulation No 207/2009 provides that an applicant for a Community trade mark may request proof that the earlier mark has been put to genuine use in the territory where it is protected during the period of five years preceding the date of publication of the trade mark application against which an opposition has been filed (judgment of 12 December 2002 in Kabushiki Kaisha Fernandes v OHIM — Harrison (HIWATT), T‑39/01, ECR, EU:T:2002:316, paragraph 34; see judgment of 27 September 2007 in La Mer Technology v OHIM — Laboratoires Goëmar (LA MER), T‑418/03, EU:T:2007:299, paragraph 51 and the case-law cited).
19 Under Rule 22(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), evidence of use must concern the place, time, extent and nature of use of the earlier trade mark (judgment of 8 July 2004 in Sunrider v OHIM — Espadafor Caba (VITAFRUIT), T‑203/02, ECR, EU:T:2004:225, paragraph 37, confirmed on appeal by judgment of 11 May 2006 in Sunrider v OHIM, C‑416/04 P, ECR, EU:C:2006:310, and judgment of 10 September 2008 in Boston Scientific v OHIM — Terumo (CAPIO), T‑325/06, EU:T:2008:338, paragraph 27).
20 In the interpretation of the notion of genuine use, account must be taken of the fact that the ratio legis of the requirement that the earlier mark must have been put to genuine use is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade mark protection to the case where large-scale commercial use has been made of the marks (judgments in VITAFRUIT, cited in paragraph 19 above, EU:T:2004:225, paragraph 38, and CAPIO, cited in paragraph 19 above, EU:T:2008:338, paragraph 28).
21 As is apparent from paragraph 43 of the judgment of 11 March 2003 in Ansul (C‑40/01, ECR, EU:C:2003:145), there is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it was registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Moreover, the condition of genuine use of the mark requires that that mark, as protected on the relevant territory, be used publicly and externally (see judgment in CAPIO, cited in paragraph 19 above, EU:T:2008:338, paragraph 29 and the case-law cited; see also, by analogy, judgment in Ansul, cited above, EU:C:2003:145, paragraph 37).
22 In the assessment of whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned in order to maintain or create a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (see judgment in CAPIO, cited in paragraph 19 above, EU:T:2008:338, paragraph 30 and the case-law cited; see also, by analogy, judgment in Ansul, cited in paragraph 21 above, EU:C:2003:145, paragraph 43).
23 As to the extent of the use to which the earlier trade mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of time during which the mark was used and the frequency of its use (see judgment in CAPIO, cited in paragraph 19 above, EU:T:2008:338, paragraph 31 and the case-law cited).
24 To examine whether an earlier trade mark has been put to genuine use, an overall assessment must be carried out, which takes into account all the relevant factors of the particular case. That assessment entails a degree of interdependence of the factors taken into account. Thus, the fact that commercial volume achieved under that mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. In addition, the turnover and the volume of sales of products under the earlier trade mark cannot be assessed in absolute terms but must be looked at in relation to other relevant factors, such as the volume of business, production or marketing capacity or the degree of diversification of the undertaking using the trade mark and the characteristics of the goods or services on the relevant market. As a result, use of the earlier mark need not always be quantitatively significant in order to be deemed genuine. Even minimal use can therefore be sufficient to be deemed genuine, provided that it is viewed as warranted in the economic sector concerned in order to maintain or create a share in the market for the goods or services protected by the mark (see judgment in CAPIO, cited in paragraph 19 above, EU:T:2008:338, paragraph 32 and the case-law cited).
25 The Court of Justice also added, in paragraph 72 of the judgment in Sunrider v OHIM, cited in paragraph 19 above (EU:C:2006:310), that it is not possible to determine a priori, and in the abstract, what quantitative threshold should be chosen in order to determine whether use is genuine or not, which means that a de minimis rule, which would not allow OHIM or, on appeal, the General Court, to appraise all the circumstances of the dispute before it, cannot therefore be laid down. Thus, the Court of Justice has held that, when it serves a real commercial purpose, even minimal use of the trade mark may be sufficient to establish genuine use (see judgment in CAPIO, cited in paragraph 19 above, EU:T:2008:338, paragraph 33 and the case-law cited).
26 The General Court has specified that genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (see judgment in CAPIO, cited in paragraph 19 above, EU:T:2008:338, paragraph 34 and the case-law cited).
27 It is in the light of those considerations that this Court must examine whether the Board of Appeal was right to find, in paragraph 23 of the contested decision, that the intervener had proven that it had sold articles of clothing bearing the earlier mark every year of the relevant period of five years preceding the publication of the application for the mark at issue for an amount totalling several hundred euro. The Board of Appeal took the view that, even if this was a small sum, it was not the total amount from sales under the earlier mark as the invoices were merely a sample aimed at proving that the mark had been used for the goods throughout the relevant period.
28 Since the Community trade mark application filed by the applicant was published on 15 January 2007, the five-year period referred to in Article 42(2) of Regulation No 207/2009 ran, as the Board of Appeal correctly stated in paragraph 20 of the contested decision, from 15 January 2002 to 14 January 2007 (‘the relevant period’); it accordingly rejected the last two invoices that the intervener had produced.
29 The evidence submitted by the intervener to the Opposition Division as regards the use of the mark LOREN SCOTT, and mentioned in paragraph 19 of the contested decision, is as follows:
– ‘several samples of clothing items bearing the LOREN SCOTT label affixed;
– a catalogue dated 2004 showing the LOREN SCOTT mark for clothing and headgear articles and indicating four addresses of the [intervener] in different towns of the Island of Tenerife and a website; and
– [twelve] invoices dated 22 January 2002, 19 August 2002, 30 June 2003, 25 September 2003, 2 July 2004, 27 July 2004, 6 July 2005, 29 November 2005, 1 August 2006, 29 November 2006, 31 January 2007 and 12 April 2007.’
30 It is apparent from the catalogue dated 2004 and which contains representations of some t-shirt and polo shirt designs that those items bear a label featuring the earlier mark in a form that does not differ from that in which that mark was registered.
31 Alongside those t-shirt and polo shirt designs, that catalogue also features cap and hat designs, on which, by contrast, no mark is visible; accordingly, the latter cannot be taken into consideration for the purposes of establishing genuine use of the earlier mark.
32 In addition, that catalogue mentions four marketing locations in Spain.
33 Furthermore, the intervener produced, in the course of the administrative proceedings, photocopies of t-shirts on which the earlier mark is affixed and is legible.
34 Those documents accordingly demonstrate that the intervener compiled, in 2004, a catalogue of goods to be marketed in four different locations in Tenerife. Those documents therefore highlight the place and nature of the use made of the earlier mark.
35 In this connection, invoice No 1126.132 of 27 July 2004 states that 313 articles, under the heading ‘camiseta LOREN 115-C-BL’, were sold at a unit price of EUR 0.87 to a company established in Tenerife. Although the product code, that is to say, the number 77000, does not appear in the 2004 catalogue, a five-digit number starting with 77 is mentioned in the catalogue in connection with certain t-shirts (namely numbers 77001 to 77006, 77009 to 77012 and 77025), a number that varies according to the colour or size of the articles mentioned.
36 The invoices for the other years in the relevant period also mention sales of goods that appear on those invoices under the designation ‘loren’ or ‘loren scott’.
37 As the Board of Appeal correctly stated, and contrary to what the applicant claims, the fact that the earlier mark does not appear in full on certain invoices in the list setting out the articles sold does not mean that they cannot be taken into consideration. The earlier mark appears at the top of the header, either on the right or on the left depending on the invoice, alongside other marks, which do not, however, contain any common elements. Accordingly, through the identification of the goods mentioned on the invoice by the designation ‘loren’, it is clear that those goods can refer solely to the earlier mark LOREN SCOTT that appears at the top of the invoice, and it should be observed, in addition, that it is not unusual for the trade mark to not even be mentioned in the list of goods sold (see, to that effect, judgment in LA MER, cited in paragraph 18 above, EU:T:2007:299, paragraph 66).
38 Furthermore, the last five digits of certain codes mentioned on the invoices (code 1077012 on invoice No 1135.375 of 6 July 2005, and code 1065383 on the following invoices: No 1107.558 of 19 August 2002, No 1117.710 of 25 September 2003, No 1125.423 of 2 July 2004 and No 1149.294 of 29 November 2006) describe the corresponding product in the 2004 catalogue (see, inter alia, the invoice designation ‘polo pique’ No 1065383 that corresponds to the representation of polo shirt No 65383 in the catalogue).
39 It is, admittedly, true, as the applicant has stated, that the amounts invoiced in respect solely of goods attributed to the earlier mark and that appear on the invoices represent a small sum, that is to say, slightly more than EUR 600.
40 However, according to the case-law referred to in paragraph 24 above, the fact that the commercial volume achieved under the earlier mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa.
41 It is clear, first, that that small sum is due to the very low price of the goods marketed (the price of a t-shirt may be EUR 0.82), with the result that, when applied to the volume of sales, it cannot be regarded as derisory, particularly since the invoices were submitted merely by way of illustration, as is apparent from the fact that their numbering is spaced out.
42 Contrary to what the applicant claims, those invoices cannot, given that they were submitted by way of illustration, represent the amount of actual sales of goods bearing the mark. As is apparent from the file submitted to the Board of Appeal, the invoices are numbered upwards in chronological order (see, to that effect, judgment in LA MER, cited in paragraph 18 above, EU:T:2007:299, paragraph 88). In so far as the invoices are spaced out as regards their numbering and dates, and those data are coherent and chronological, it follows that the invoices can only be illustrative.
43 Secondly, that small sum notwithstanding, it must be stated that goods bearing the earlier mark were marketed regularly, the first invoice mentioning a product of that brand being dated 22 January 2002 and the last being dated 29 November 2006, that is to say, during the relevant five-year period, with — albeit modest — sales achieved throughout that period.
44 Those factors therefore serve to distinguish this case from that which gave rise to the judgment of 30 April 2008 in Rykiel création et diffusion de modèles v OHIM — Cuadrado (SONIA SONIA RYKIEL) (T‑131/06, EU:T:2008:135), on which the applicant relies (see, in particular, paragraph 55 of that judgment), in which the period over which the goods were marketed was very short.
45 Furthermore, those invoices were made out to different persons, which shows, in addition, that the earlier mark was used publicly and externally and not solely within the undertaking which owns the earlier mark or within a distribution network owned or controlled by that undertaking (see, to that effect, judgments in VITAFRUIT, cited in paragraph 19 above, EU:T:2004:225, paragraph 50, and LA MER, cited in paragraph 18 above, EU:T:2007:299, paragraph 87).
46 The sales effected, even though they are not considerable, constitute use which objectively is such as to create or preserve an outlet for the goods concerned, the commercial volume of which, in relation to the period and frequency of use, is not so low that it may be concluded that the use is merely token, minimal or notional for the sole purpose of preserving the rights conferred by the mark (see, to that effect, judgments in Ansul, cited in paragraph 21 above, EU:C:2003:145, paragraphs 35 and 36, and in LA MER, cited in paragraph 18 above, EU:T:2007:299, paragraph 90).
47 In those circumstances, the first plea in law must be rejected.
Second plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009
48 The applicant claims that, having regard to the significant visual differences between the signs at issue and the lack of phonetic and conceptual similarity between those signs, there is no likelihood of confusion, particularly since the mark applied for is inherently distinctive, a factor which, it alleges, the Board of Appeal failed to take into consideration.
49 Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for may not be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(ii) of that regulation, the term ‘earlier trade marks’ includes national trade marks with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.
50 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings constitutes a likelihood of confusion (judgments in CAPIO, cited in paragraph 19 above, EU:T:2008:338, paragraph 70, and of 31 January 2012 in Cervecería Modelo v OHIM — Plataforma Continental (LA VICTORIA DE MEXICO), T‑205/10, EU:T:2012:36, paragraph 23; see also, by analogy, judgments of 29 September 1998 in Canon, C‑39/97, ECR, EU:C:1998:442, paragraph 29, and of 22 June 1999 in Lloyd Schuhfabrik Meyer, C‑342/97, ECR, EU:C:1999:323, paragraph 17).
51 Furthermore, the likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case (judgment in CAPIO, cited in paragraph 19 above, EU:T:2008:338, paragraph 71; see also, by analogy, judgments of 11 November 1997 in SABEL, C‑251/95, ECR, EU:C:1997:528, paragraph 22; Canon, cited in paragraph 50 above, EU:C:1998:442, paragraph 16; and Lloyd Schuhfabrik Meyer, cited in paragraph 50 above, EU:C:1999:323, paragraph 18).
52 That global assessment implies some interdependence of the factors taken into account, in particular of the similarity of the marks and that of the goods or services covered. Accordingly, a low degree of similarity between the goods or services covered may be offset by a high degree of similarity between the marks, and vice versa (judgments of 13 September 2007 in Il Ponte Finanziaria v OHIM, C‑234/06 P, ECR, EU:C:2007:514, paragraph 48, and of 23 October 2002 in Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, ECR, EU:T:2002:261, paragraph 25; see also, by analogy, judgment in Canon, cited in paragraph 50 above, EU:C:1998:442, paragraph 17). The interdependence of those factors is expressly referred to in recital 8 in the preamble to Regulation No 207/2009, which states that the concept of similarity should be interpreted in relation to the likelihood of confusion, the assessment of which depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, and the degree of similarity between the trade mark and the sign and between the goods or services identified (see judgment of 18 September 2012 in Scandic Distilleries v OHIM — Bürgerbräu, Röhm & Söhne (BÜRGER), T‑460/11, EU:T:2012:432, paragraph 26 and the case-law cited).
53 As is apparent from recital 8 in the preamble to Regulation No 207/2009, the assessment of the likelihood of confusion depends on numerous factors, and in particular on the public’s recognition of the trade mark on the market in question. The more distinctive the trade mark, the greater will be the likelihood of confusion, and therefore marks with a high distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with less distinctive character (see, by analogy, judgments in SABEL, cited in paragraph 51 above, EU:C:1997:528, paragraph 24; Canon, cited in paragraph 50 above, EU:C:1998:442, paragraph 18; and Lloyd Schuhfabrik Meyer, cited in paragraph 50 above, EU:C:1999:323, paragraph 20).
54 Furthermore, the global assessment of the visual, phonetic or conceptual similarity of the signs at issue must be based on the overall impression given by those signs, account being taken in particular of their distinctive and dominant components. The wording of Article 8(1)(b) of Regulation No 207/2009 — ‘there exists a likelihood of confusion on the part of the public’ — shows that the perception of the marks in the mind of the average consumer of the type of goods or services in question plays a decisive role in the global assessment of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (judgment in BÜRGER, cited in paragraph 52 above, EU:T:2012:432, paragraph 27; see also, by analogy, judgment in SABEL, cited in paragraph 51 above, EU:C:1997:528, paragraph 23).
55 For the purposes of the global assessment of the likelihood of confusion, the average consumer of the goods in question is deemed to be reasonably well informed and reasonably observant and circumspect. Furthermore, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks, but must place his trust in his imperfect recollection of them. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services concerned (see judgment in BÜRGER, cited in paragraph 52 above, EU:T:2012:432, paragraph 28 and the case-law cited; see also, by analogy, judgment in Lloyd Schuhfabrik Meyer, cited in paragraph 50 above, EU:C:1999:323, paragraph 26).
56 It is in the light of the foregoing considerations that this Court must examine the assessment made by the Board of Appeal of the likelihood of confusion between the signs at issue.
57 In the present case, the earlier mark is a Spanish mark. Consequently, as the Board of Appeal found in paragraph 31 of the contested decision, the relevant territory is Spain, a finding which is not contested by the applicant.
58 Furthermore, as the Board of Appeal correctly stated in paragraph 31 of the contested decision, without this being challenged by the applicant, the target public consists of the average consumer of the goods in question, who is reasonably well informed and reasonably observant and circumspect.
59 In the first place, as regards the similarity of the goods in question, it is clear that, as the Board of Appeal correctly stated in paragraph 25 of the contested decision, without being contradicted by the applicant, the goods covered by the trade mark application and in Class 25 are identical or similar to the goods ‘clothes for ladies, men and children’ covered by the earlier mark and which are also in Class 25.
60 In the second place, as regards the similarity of the signs at issue, according to settled case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, that is, visually, aurally or conceptually (judgments in MATRATZEN, cited in paragraph 52 above, EU:T:2002:261, paragraph 30, and in CAPIO, cited in paragraph 19 above, EU:T:2008:338, paragraph 89; see also, by analogy, judgment in SABEL, cited in paragraph 51 above, EU:C:1997:528, paragraph 23).
61 Furthermore, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks, but must place his trust in the imperfect picture of them that he has kept in his mind (judgment in LA MER, cited in paragraph 18 above, EU:T:2007:299, paragraph 104).
62 First, it is true, as the Board of Appeal stated in paragraph 26 of the contested decision, that, visually, the signs at issue have the same number of letters and they coincide in the fact that the first word starts with the letter ‘l’ and ends with the element ‘ren’. The only difference between the signs at issue lies in the fact that the second letter of the earlier mark is an ‘o’, whereas the mark applied for contains the element ‘’w’. The second word, namely ‘scott’, is identical in the signs at issue.
63 Even though it is true, as the applicant states, that the letter ‘w’ is seldom used in Spanish, it is clear that the Board of Appeal did not find a high degree of similarity but a medium degree of similarity; it thus took that difference between the signs at issue into consideration.
64 The Board of Appeal was therefore right to find that the signs at issue were visually similar to a medium degree.
65 Secondly, as regards phonetic similarity, it is clear, as the Board of Appeal found in paragraph 27 of the contested decision, that the pronunciation of the signs at issue coincides inasmuch as the common element ‘scott’ will be pronounced in an identical manner. The pronunciation of the first element of the signs at issue, namely ‘loren’ as regards the earlier mark and ‘l’wren’ as regards the mark applied for, will be only slightly different for the Spanish consumer, even in situations where, as the applicant claims, that consumer might hesitate over the pronunciation of the element ‘l’w’.
66 However, even when so hesitating, the Spanish consumer would not pronounce the ‘w’, thereby marking a slight difference between the pronunciation of ‘lren’ and ‘loren’, which, taken together with the element ‘scott’ that is identical in the two signs at issue, will make it possible to hear only a slight difference between the signs at issue.
67 Consequently, even if the element ‘l’wren’ were to be pronounced in the most different way from the element ‘loren’, there would still be an average degree of similarity between the signs at issue, since the syllables ‘ren’, ‘es’ and ‘kot’ are pronounced in an identical manner.
68 The Board of Appeal was therefore right to find that there was an average degree of phonetic similarity between the signs at issue.
69 Thirdly, as regards the conceptual comparison, and again as the Board of Appeal correctly stated in paragraph 28 of the contested decision, the signs at issue refer to a forename and a surname and will be perceived as English words which do not make reference to any concept. The conceptual comparison is therefore neutral, with the result that it will not influence the assessment of the comparison of the signs.
70 That conclusion cannot be invalidated by the applicant’s argument as to the fame of the designer who is behind the mark applied for and which, it is claimed, the Board of Appeal failed to take into consideration.
71 It is evident that the documents submitted in the course of the administrative proceedings, with the exception of one press article published in El Mundo and dated 7 March 2006, are all subsequent to the date of the application for registration, namely 11 July 2006, and their content does not in any way refer to notoriety acquired before that date, with the result that those documents cannot be taken into consideration for the purposes of establishing the notoriety claimed (see, to that effect, order of 5 October 2004 in Alcon v OHIM, C‑192/03 P, ECR, EU:C:2004:587, paragraph 41 and the case-law cited; see also, to that effect, judgment of 7 September 2006 in L & D v OHIM — Sämann (Aire Limpio), T‑168/04, ECR, EU:T:2006:245, paragraph 81).
72 Furthermore, without its being necessary to consider whether evidence based on the results of an Internet search engine can establish a trade mark’s notoriety, suffice it to note that the search upon which the applicant relies relates to a period which is also subsequent to the date of the application for registration.
73 Moreover, as OHIM correctly observes, even if, in any event, the documents produced by the applicant were capable of establishing that Ms L’Wren Scott was known to certain celebrities, it is clear that those documents do not show that Ms L’Wren Scott herself had celebrity status in Spain for the relevant public, with the consequence that the relevant public would perceive the mark applied for as forming an autonomous conceptual unit, rather than as the mere association of two elements, namely ‘l’wren’ and ‘scott’.
74 Accordingly, the case-law resulting from the judgments of 24 June 2010 in Becker v Harman International Industries (C‑51/09 P, ECR, EU:C:2010:368) and of 22 June 2004 in Ruiz-Picasso and Others v OHIM — DaimlerChrysler (PICARO) (T‑185/02, ECR, EU:T:2004:189), on which the applicant relies, cannot be applied by analogy to the present case.
75 It follows from the foregoing that the Board of Appeal was right to find that the conceptual comparison would not influence the assessment of the comparison of the signs at issue.
76 It must therefore be concluded from all of the foregoing that the signs at issue are similar overall.
77 In the third place, as regards the likelihood of confusion, it should be recalled that a likelihood of confusion exists if, cumulatively, the degree of similarity between the trade marks in question and the degree of similarity between the goods or services covered by those marks are sufficiently high (judgment in MATRATZEN, cited in paragraph 52 above, EU:T:2002:261, paragraph 45).
78 In the present case, it has been held in paragraph 59 above that the goods concerned are identical or similar, and in paragraph 76 above that the signs at issue are similar overall.
79 Accordingly, considered cumulatively, the degree of similarity between the signs at issue and the degree of similarity between the goods covered by those signs are sufficiently high. Consequently, the Board of Appeal was right to find, in paragraph 32 of the contested decision, that there was a likelihood of confusion between the signs at issue.
80 That conclusion is not invalidated by the applicant’s argument that the mark applied for is highly distinctive.
81 As is apparent from paragraphs 70 to 73 above, given that the applicant has failed to establish the notoriety of the mark applied for, that mark must, in the absence of any other evidence to support its being highly distinctive, be regarded as being devoid of such a distinctive character, since it amounts merely to the combination of two elements, namely ‘l’wren’ and ‘scott’, which contains slight differences as compared with the combination of the elements ‘loren’ and ‘scott’.
82 Since the goods in question are identical or similar and the signs at issue are similar overall, the contested decision must be confirmed in so far as the Board of Appeal concluded that there was a likelihood of confusion.
83 It follows from the foregoing that the second plea in law must be rejected and the action dismissed in its entirety, without there being any need to rule on the admissibility of the applicant’s heads of claim seeking registration of the mark applied for and annulment of the Opposition Division’s decision of 28 October 2009 (see, to that effect, judgment of 8 December 2011 in Aktieselskabet af 21. november 2001 v OHIM — Parfums Givenchy (only givenchy), T‑586/10, EU:T:2011:722, paragraph 67 and the case-law cited, and judgment of 25 April 2013 in Metropolis Inmobiliarias y Restauraciones v OHIM — MIP Metro (METROINVEST), T‑284/11, EU:T:2013:218, paragraph 79).
Costs
84 Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by OHIM and the intervener.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders LS Fashion, LLC, to pay the costs.
Martins Ribeiro | Gervasoni | Madise |
Delivered in open court in Luxembourg on 27 February 2015.
[Signatures]